Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

The content of the proposed
directive has attracted substantial commentary, particularly with regard to
provisions intended to introduce a new neighbouring right for press publishers
(Article 11) and obligations for hosting providers in the context of what has
come to be known as the ‘value gap’ problem (Article 13).

“After a tortuous journey and conflicting
opinions amongst the EU institutions (the Commission, the Committees of the
European Parliament, the Council), the approval of the draft Directive on copyright
in the Digital Single Market is around the corner.

The goals are sound: to adapt copyright
to the digital ecosystem and the challenges of new technologies; to strengthen
the effectiveness of rights and to promote an enriched relationship between the
authors/publishers and the general public; to safeguard a "free and
pluralistic press" and to guarantee "quality journalism and easy access
to information for all".

The key challenges are shared by the
different parties: addressing the radical changes brought by the digital
economy, which overwhelm the publishing industry and requiring adaptation of traditional
business models; facilitating circulation of works and the licensing system;
and allowing publishers and authors to participate with “equal arms” in the
value chain.

The proposed solutions to these problems
are however controversial, as the Commission, Council and Parliament swing
between compromise attempts and sudden reevaluations.

Lionel Bently

The divisions are most pronounced in
relation to two provisions of the proposed Directive: i) Article 11 — with
which the European Commission proposes to introduce a new right in favour of
press publishers to ensure the sustainability of the sector against new
forms of exploitation promoted by aggregators and online operators; and ii) Article
13 — through which it is intended to control platforms and Internet
Service Providers (ISPs) that host and make available content.

Article 11 is inspired by similar rules
recently introduced in Germany and Spain. Experience with these regimes as yet
does not suggest that the proposed reform will do much to sustain newspaper publishing
or the quality of local journalism. Outside Italy, the point has been made that
many of the difficulties facing publishers can be more proportionately solved
by a presumption that they hold rights in the content of their publications,
rather than through the creation of a new “ancillary right” in any “fixation of
a collection of literary works of a journalistic nature”, with the uncertainty
necessarily attendant on ascertaining the scope of such right. From an Italian
perspective, Article 11 does not add much to the legal framework.

Different difficulties arise from the
current wording of article 13 and its associated recitals. Many of these
difficulties derive from the fact that the proposal seeks to intervene in a
complex legal ecosystem, where there are established instruments (the 2000 eCommerce Directive, the2001 InformationSociety Directive, the 2004 Enforcement Directive and a raft of jurisprudence
of the Court of Justice of the European Union (CJEU) which has interpreted these
through the lens of fundamental rights as recognized in the EU Charter.

First and foremost, the definition of
legal entities to which the new obligations apply, is hopelessly uncertain.
Article 13 refers to “information society service providers that store and
provide to the public access to large
amounts of works or other subject matter uploaded by their users,” and thus
hands over to the CJEU the unenviable task of identifying whether “large”
implies 200 items or 200,000or
somewhere in between. The draft JURI Committee Report sensibly seeks to replace
“large amounts” with a criterion relating to the character of the activities
rather than the volume of content. That amendment would limit the application of the
provision to information society service providers that are actively and
directly involved in the making available to the public of user uploaded
content and where this activity is not of a mere technical, automatic and
passive nature.

Valeria Falce

Secondly, the proposed Directive states
that these operators "should take appropriate and proportionate measures
to ensure the protection of such works (…) for example through the use of
effective technologies." The provision refers to the filtering and content
tracking techniques already used in other industries, such as the music
industry. However, the CJEU has already held (twice) that such technologies are
incompatible with Article 15 of the eCommerce Directive and fundamental rights
and freedoms of the platforms and their users (including their personal data).
For this reason, amendments in several of the Parliamentary Committees and in
the Council Working Party would delete specific reference to filtering
technology, which appears to be the only acceptable way forward.

Thirdly, the proposal uses the terms “communication
to the public” without clearly referencing Article 3 of the Information Society
Directive, where it relates to a distinct concept. Implicitly insisting on the
conclusion that any service provider that stores and provides access to the
public to subject matter uploaded by their users is “communicating to the
public,” Recital 38 ignores the CJEU’s instruction that every case should be
assessed on its facts. Nor can any assumption be drawn from the recent Pirate Bay decision[see here] that hosts that store
largely lawful material, but also some unlawfully uploaded subject matter
(prior to receiving take down notices) are liable of copyright infringement for
communicating the unlawful material to the public. Indeed, the CJEU has stated
that communication depends on an awareness of the effects of an intervention (a
criterion that is hard to fulfill when the host is unaware of the material that
has been uploaded).

A similar objection can be made in
relation to the manner in which Recital 38 appears to promote a particular
interpretation of Article 14 of the eCommerce Directive, which offers certain
hosts immunity from financial liability as regards illegal material. While the
CJEU has emphasized the importance of knowledge and control over then content as
the key matters that transform a host into someone to whom the immunity is
inapplicable, the Commission controversially implies that the immunity vanishes
as soon as a host is involved in any “optimization of the presentation of
materials or promotion of such.”

Ultimately, while the Commission appears
to pursue
a clear objective (reviewing the set of responsibilities) through a bold
framework, because the proposed Directive lies within a network of
pre-established instruments Article13 is likely to become a legislative bull in
a fragile legal china-shop. It will at the very least introduce “large amounts”
of uncertainty, or, worse, obscure the obligations of the subjects involved.”

Thursday, 28 September 2017

Readers in the life science sector will be aware of the proposed relocation of the EMA away from London to another European city in the wake of the Brexit referendum vote. This week, the EMA has published a press release, with a rather alarming sub-heading:

"Staff survey indicates that the future of public health in Europe is at stake"

Barcelona - one of the top 5?

The press release explains that to complement the European Commission's assessment of all bids for the relocation of the Agency submitted by Member States that will be published later this month, the EMA is making available the results of its most recent staff retention survey. The survey indicates that for 65% of EMA staff, the new EMA location will be a determining factor in their decision-making whether to relocate or not. The vote on the EMA's new host city is due to take place in November 2017.

A summary of the results of the survey has been published on the EMA website and can be found here, along with an explanation of the methodology involved. Each candidate host city is attributed a number, and so remains anonymous. (By way of background the full list of the candidate host cities along with details of their bids can be found here.)

The five candidate host cities with the most favourable feedback in the survey range from staff retention rates of 65% to 81%. The lowest had a measly staff retention rate of 6% (the author is having fun trying to guess the identify of candidate 19...). In terms of impact on the EMA's workings, the survey notes that staff retention rates of 65%+ (for the five highest rated candidates) "meets EMA requirements" but even in this scenario, there would still be the possibility of some delays for the approval of new medicines and safety monitoring, and some public health initiatives would move at a slower pace. The operational implications for the lowest ranked cities are said to be a "public health crisis".
This GuestKat has heard whisperings in recent weeks about likely staff retention rates after the EMA's relocation, and this survey and press release presents a fascinating insight. The fact that the EMA has been so transparent in releasing the information suggests that the issue of staff retention is being taken very seriously by the agency.

Data was recently described by The Economist as as the new oil. Every valuable asset tends to be protected by IP in some shape or form and data* is no exception. It is usually protected by a combination of lengthy contracts, trade secrets/the law of confidence, copyright and/or database right. Unsurprisingly, it is also often the subject of litigation.Technomed v Bluecrest[2017] EWHC 2142 is a recent High Court decision about the rights in databases and the potential IP dangers, including copyright infringement, which can arise when a business relationship terminates. This case is interesting for stretching the bounds of what can be protected as a database including a PDF and XML format reports.What happened?

Technomed supplies ECG equipment, systems and services using an internet-based ECG analysis and reporting system known as ECG cloud. ECG Cloud enables ECG readings to be analysed remotely as part of a screening service which flags up potential problems (via a traffic light system) for further investigation by cardiologists. Technomed developed the current version of ECG cloud in 2010.

In 2012, Technomed entered into an agreement with Bluecrest to provide health screening services. By late 2013, the relationship had soured and Bluecrest approached Express (its co-defendant) to take on Technomed's responsibilities. As the judge, David Stone (sitting as a Deputy High Court Judge), put it "whilst Bluecrest was working with Express to enable a switch to occur, it was also dissembling with Technomed". From early 2014, Express was in place as Bluecrest's new supplier. Technomed alleged that Bluecrest and Express continued to use and infringed, their copyright in various explanatory images and in the database which underpinned their services.

Database rightDatabase right is an infrequent visitor to the IPKat's pages but it is an important right in many businesses and it is worth a quick reminder of exactly what it is ... The EU recognised the importance of databases to modern business and back in 1996 it created a standalone (or sui generis) database right. This right protects the investment which is put into the database rather than the creation of the data itself.

Article 1(2) of the Database Directive sets out its scope: "For the purposes of this Directive, ‘database’ shall mean a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means."

Even if a database is identified, it does not necessarily follow that the database is protected by database right.

Database right subsists in a database where the requirements of Article 7(1) of the Database Directive are met. This means, "a database which shows that there has been qualitatively or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilisation of the whole or a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database."

Like copyright, database right arises automatically. The right lasts for 15 years. However, each time the database is substantially modified a new set of rights are created for that database. Therefore, provided the database is regularly updated it can theoretically be protected indefinitely.

Copyright in a database

A database can be also protected by copyright. Article 3(1) of the Database Directive explains that "databases which, by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation shall be protected as such by copyright. No other criteria shall be applied to determine their eligibility for that protection."

There was some argument that the pictures and database were not sufficiently original to be protected by copyright. It was agreed that the test for originality for database copyright is higher than for literary and artistic works (Football Dataco Limited v Brittens Pools Limited [2010] EWHC 841). Stone pointed out that "it is insufficient in a copyright case to claim that the copyright work relied on is generic" (see para 90 for a summary of the various ways in which this sentiment can be expressed). Instead, there are two questions to be asked:First, has the work been slavishly copied? "the usual course will be to adduce the text books that are alleged to have been copied, to show that they were both accessible and earlier, and then to point to identical or near identical images or passages from which the copyright work alleged has been slavishly copied."

Second, where it is alleged that there has been no more than negligible or trivial effort or relevant skill in the creation of the work, this, again, needs to be proved by cogent evidence, mindful of the low threshold set by the legislation as interpreted by the Court of Justice.

Can a PDF be a database?

The Defendants argued that a PDF can never be a database "on the basis that it is akin to a photograph of a database, rather than the database itself." However, the judge noted that, in practice, the PDF was used in no different way to a telephone book and "Individual Classifications are accessible, either by reading the pdf with the human eye, or accessing the spread sheet electronically." It took "many hours" to verify the information "through a process of audit and review" [75]. Consequently "Technomed invested substantially in the presentation of the information...that investment was in the obtaining and verifying of the data, assessed qualitatively."

Bluecrest had provided Express with a complete copy of the PDF and it was then copied for the first and second versions of the Express database. By the third version, there had been sufficient changes for it to no longer infringe [79].

What about the XML formats?

Each XML file for each patient provided to Bluecrest contained an extraction from the database for the relevant patient. The judge accepted that because the XML format contained content as well as structure and was the product of it's author's intellectual creation, copyright subsisted in the format.

Copyright in explanatory materials?

The explanatory materials were based on existing explanations of ECG monitoring but converted into more patient friendly language. Although there were some similarities with earlier cardiology documents, because the explanatory materials were "not a slavish" copy, they were entitled to copyright protection.

There were similar arguments about the "patient definitions" i.e. the written response which was delivered to patients following ECG readings. There are different ways of expressing the results ranging from (see para 20):

"The "normal" resting heart rate sits in a range of 60 – 99 beats per minute. Your heart rate is within normal limits."

to:

"Congratulations, well done, your heartbeat is normal, keep eating an apple a day and getting regular exercise, this is tops! ..."

Because "sufficient, non-negligible intellectual effort was expended" [122] in both versions this was sufficient for the patient definitions to be protected by copyright.

What about an amended stock images?
The two hearts image and wave diagrams were based on stock images. However, both were amended to a sufficient extent to create a new copyright work. The addition of words to both diagrams did not mean that they could be discarded from the artistic work. As the judge put it: "given words are a common part of a diagram, a term expressly defined in the legislation to be a graphic work, I do not consider this issue to be in doubt. ... Both diagrams are clearly artistic works within the meaning of section 4 of the CDPA 1988" [133].

Was there infringement?
In short - yes. There was clearly copying in the first version as the copyright works were almost identically reproduced including some errors. Although the judge considered that on the evidence the third version had been copied, the level of copying was not sufficient for a finding of infringement [128].Flagrancy

The emails between Bluecrest and Express sealed their fate on flagrancy (see paras 38 and 39, for example). They showed that Bluecrest had been sent the XML format file and asked "let me know how long you think it would take to replicate the XML Format/trace pdf that I sent through". Some further documents were sent a few weeks later including the Two Hearts Diagram, the Wave Diagram, the Explanatory Materials, and a pdf document containing the Database.

The attitude that Bluecrest took to the negotiations with Technomed added further fuel to the fire, particularly this choice extract: "I will try to speak to [Mr Hashemi of Technomed] at 8.30ish to give him the impression we are going to agree to his terms, but need time to obtain the guarantees he's after (being ultra-nice to him and giving him a lot of bullshit) but in the background can we work to make the switch asap?"Damages
Although both copyright and database right infringement was found, Technomed was not entitled to double recovery.

Witnesses with a conflict of interest

One of the issues which cropped up concerned an expert witnesses conflict of interest. The witness did not disclose that his company had been in a business relationship with one of the Defendants. This conflict of interest only became apparent in the course of cross examination. The judge, David Stone, noted that part of the reason for the conflict not being disclosed was that the witness "was clearly not properly instructed under Part 35". Instead, the witness wrote a letter which was turned into a witness statement by the legal team. This meant that it included the fairly standard statements regarding having read part 35 and a statement of independence both of which turned out to be inaccurate.

It did not appear from the judgment that a great deal turned on the particular witness' evidence in the end but this is a useful reminder of the importance of checking that witnesses are aware of their disclosure obligations and actually read the final form of their evidence before signature (and long before they end up in the witness box).

* There are undoubtedly pedants out there who will point out that data is the plural. This is true, however, (i) that is not how the word tends to be used in practice and (ii) saying or writing "data are" just sounds a bit wrong. Apologies if I have offended anyone's grammatical sensibilities.

Wednesday, 27 September 2017

This GuestKat was delighted to get her paws on a recent decision handed down by the Court of Milan which forms part of the long running multi-jurisdictional battle concerning Eli Lilly's patent protecting its pemetrexed (Alimta) product. She is doing her best to digest this month's decision of Fresenius Kabi Oncology Plc and Ors v Eli Lilly & Companyand Ors (N.R.G. 54470/2016) (available on darts-ip) by reference to an automated online translation of the decision, and so asks that readers bear with her. The gist of the Court of Milan's judgment is as follows.

Background

Magnifico Milano

Fresenius issued proceedings in the Court of Milan in Oct 2016 for precautionary measures (interim relief). In its application, Fresenius sought a declaration from the Court that Fresenius' generic product - based on pemetrexed diacid (with tromethamine) - did not infringe the Italian designation of Eli Lilly's patent EP 1313508, which specifies pemetrexed disodium in the claims. By way of reminder, pemetrexed is an oncology treatment, the damaging side-effects of which can be mitigated if given together with vitamin B12. The applicant argued inter alia that:

the claims of EP '508 are limited to only pemetrexed disodium, because of the unambiguous wording of the claims;

infringement on the basis of equivalents was excluded in this case, because the file history of EP '508 showed that the patentee had limited the scope of protection to the salt pemetrexed disodium;

use of pemetrexed diacid (with tromethamine) was not suggested even implicitly in EP '508.

Eli Lilly counterclaimed, seeking an injunction on the basis of direct and indirect infringement of its patent.

Court of Milan's analysis and decision
The Court examined the EPO file history in detail. In the text of the original patent application, the claims extended to the entire class of antifolates. It was subsequently limited by the patentee to 'pemetrexed', and finally to 'pemetrexed disodium'. These changes to the claims were consistent with changes to the EP '508 description. The Court noted that these changes were a 'clear delineation of patent protection', for only pemetrexed disodium. Other compounds, such as pemetrexed diacid were therefore excluded from the scope of the EP '508 claims. Further, while Fresenius' product has the same therapeutic effect as Alimta, the association of pemetrexed disodium associated with tromethamine could not also be considered an obvious substitution of the expression pemetrexed disodium in combination with vitamin B12. Any form of direct infringement, including on the basis of equivalents was excluded. Further, there was no indirect infringement - the SmPC of the generic product indicated that reconstitution and dilution would happen in a glucose solution, rather than a saline solution as specified in the claims of EP '508.

Consideration of UK decision

Eli Lilly drew the recent decision of the UK Supreme Court in Eli Lilly v Actavis to the Court of Milan's attention. The UK judgment considered whether the Actavis generic pemetrexed products, which used (a) pemetrexed diacid, (b) pemetrexed ditromethamine, or (c) pemetrexed dipotassium, directly infringed the UK, Italian, Spanish or French designations of the patent claims, which specify pemetrexed disodium.

Arnold J. had found at first instance in the UK proceedings that under Italian law "the patent clearly demonstrated a conscious intention of the patentee to limit the claims to pemetrexed disodium” and that this was "amply confirmed by the prosecution history". However, both these conclusions were rejected by the Supreme Court which found direct infringement of the Italian designation of the patent by the Actavis variants. The Court of Milan noted that it was not bound by the UK Supreme Court decision in relation to the Italian designation, because those proceedings concerned different parties, and the generic products in the UK proceedings were not identical in their excipients, ratios, and licensed indications to Fresenius' product. (For anyone in need of a quick recap, Stephen's series of posts on the UK Supreme Court decision can be found here (equivalence), here (EPO file history) and here (consideration of French, Italian and Spanish designations)).

Although the facts of the Italian and UK cases differ in certain respects, the Court of Milan judgment is an interesting juxtaposition against the UK Supreme Court decision. Should a doctrine of equivalents go hand in hand with some form of file wrapper estoppel? Any insights (particularly from Italian patent enthusiasts) are welcome.

Tuesday, 26 September 2017

Former Guest Kat Valentina Torelli has carefully followed developments in the lead-up to the introduction on October 1st of a certification mark at the EU level. She shares her thoughts below on this and related developments.

IP professionals and enthusiasts are likely well aware that further changes to Regulation No. 207/2009 on the EU trade mark (the 'EUTMR'), will take effect as of 1 October 2017. Included among these changes is the introduction of a certification mark at the EU level, pursuant to the provisions of Articles 74a to 74k of the EUTMR the amending regulation Regulation (EU) No 2015/2424 (the 'Amending Regulation').

The Amending Regulation already entered into force on 23 March 2016, but required secondary legislation to be implemented before changes, such as those concerning the introduction of certification marks at the EU level, could apply (see Implementing Regulation laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark and the Delegated Regulation
supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96).

Against this background, as of 1 October 2017, any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for a certification mark, which is defined by Article 83 of the Regulation No. 1001/2017 on the European Union trade mark (codification) as:

“an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified”.

Through certification marks the trade mark proprietor guarantees certain specific characteristics of the goods and services applied for against the standards set out in the regulations of use and controlled under his responsibility. The certification mark holder is indeed the entity charged with the burden of certifying the goods and services protected by the certification mark; it cannot be a person carrying out a business involving the supply of the certified goods or services. Therefore, the holder of a certification mark cannot use the certification mark in respect of the relevant goods or services that are being certified.

At the time of the application, the applicant for a certification mark: (a) must state that he is applying for an EU certification mark and (b) inter alia must supply the regulations governing use of an EU collective mark no later than two months from the date of filing. In particular, the regulation governing use of the certification mark shall specify the following:

• The list of goods and services of an EU certification mark;

• The persons authorised to use the mark;

• The characteristics to be certified by the mark;

• How the certifying body is to test those characteristics and to supervise the use of the mark;

• The conditions of use of the mark, including sanctions.

Notably, a certification mark cannot protect goods or services certified in respect of a geographical origin, since the scope of certification may cover only the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics thereof.

Against this background, this blogger has been thinking about the European Union's EU Trust Mark for Qualified Trust Services (EUTM No. 013713615). The mark was filed for registration in order to comply with Article 23 to the eIDAS Regulation (i.e. Regulation No 910/2014 on electronic identification and trust services for electronic transactions in the internal market and repealing Directive 1999/93/EC) and the Commission's Implementing Regulation No. 806/2015 in order to allow qualified trust service providers to voluntarily identify and distinguish their qualified trust services (e.g., the creation, verification, and validation of electronic signatures, electronic seals or electronic time stamps, electronic registered delivery services and certificates related to those services, website authentication, the preservation of electronic signatures, and seals or certificates related to those services). In this regard, the denomination “Trust Mark” is simply the specification of the trade mark to be used in the context of the provision of the aforementioned qualified trust services.

Under the eIDAS Regulation, a distinction between qualified trust services (and related providers) and non-qualified services (and related providers) has been introduced to ensure high-level security for users of a qualified trust service in accordance with the requirements established in the eIDAS Regulation. To this end, qualified trust service providers are subject to a conformity assessment and supervision of Member States' supervisory bodies for compliance with the eIDAS Regulation requirements.

The issue is raised because the Trust Mark for Qualified Trust Services (whose logo was selected in furtherance of the launch of the “e-Mark U Trust” competition to create its design), was applied for as a collective mark in 2015, when registration of a EU certification mark was not yet available. Since, as noted, the Trust Mark for Qualified Trust Services serves the purpose of distinguishing a qualified trust service from a non-qualified one, such mark might be viewed as “certifying” such qualified trust services.

However, the European Union chose to apply for registration of a collective mark when filing for the EU Trust Mark for Qualified Trust Services. It is possible to understand this action as having been dictated by differences between the function and use of a certification mark in comparison with those of collective marks.

By way of assistance, set out is a chart to explain the differences between EU certification and collective marks:

EU Certification Marks

EU Collective Marks

Function

Distinguishes goods and services which are certified by
proprietor from goods and services that are not so certified.

Distinguishes the goods or services of the members of the
association which is the proprietor of the mark from those of other
undertakings.

Use

Used by companies and individuals certified by the entity which
holds the mark.

Used by members of the association which holds the mark.

Entitlement

Natural persons.

Legal persons.

Certain
associations.

Legal persons of
public law (natural persons excluded).

With respect to the eIDAS Regulation, this EU legislative act was adopted in 2014 to harmonize throughout the Internal Market the rules regulating the use of electronic identification means and the provision of trust services (e.g. electronic signatures, electronic seals, time stamping, registered electronic delivery and website authentication).

Under the eIDAS Regulation, Member States designate the supervisory body established in their territory, or in the territory of another Member State subject to an agreement with the latter. Thus, in order to supervise that the qualified trust service providers established in the designating Member State and their qualified trust services meet the requirements laid down in the Regulation, there might be 28 supervisory bodies providing guarantees for those providers and services. These bodies might also be responsible, such as is the case is for the Italian Agenzia per l’Italia Digitale (AgID), for establishing, maintaining and publishing national trusted lists that include information related to qualified trust service providers and related services.

Therefore, such allocation of responsibilities under the eIDAS Regulation might clash with the provision under the EUTM Regulation, whereby the holder of an EU certification mark is the one guaranteeing the certification of the goods or services protected by the mark. Given that in each EU Member State there may be a national body charged with the certification of the qualified trust services there may be 28 entities that might be the legitimate holders of a certification mark in each EU jurisdiction. Accordingly, an application for an EU (certification) Trust Mark for Qualified Trust Services might be regarded as an unsuitable option precisely because only one entity can be the holder of a certification mark, having certifying powers in respect of the goods and services protected by such mark.

Monday, 25 September 2017

TV formats may be
incredibly valuable, and be sold in franchise in several countries. As a
result, also disputes relating to TV formats may be complex, lengthy and with
uncertain outcomes, as the current litigation relating to The
Voice, for
example, demonstrates [here and here].

In
addition to the complexities of individual cases, a further difficulty is defining what kind of legal treatment TV formats are subject to in the first place.
Discussion of the type of protection available has been, in fact, rather
contentious in a number of countries.

On
the one hand, there are jurisdictions (like the UK), in which subject-matter
like TV formats may not to be really suitable for inclusion in the
scope of protection of an IP right like copyright (also for difficulties
related to the closed subject-matter
categorisation envisaged by the Copyright, Designs and Patents Act). On the
other hand, there are countries which have managed to accommodate protection of
TV formats within their own copyright regimes.

The
Court recalled that the Italian Copyright Act does not contain a notion of
'format'. However the definition provided in Bulletin 66/1994 of SIAE,
which also allows authors of formats to deposit them, should be taken into account.

The Italian Supreme Court

According
to SIAE's document, a work can qualify as a format if it displays - as relevant
elements - logical and thematic connections composed of a title, a basic
narrative structure, a scenography and fixed characters, which result in a
structure that can be repeated. This means that, for instance, a TV programme
that mainly consists of improvisations lacks such repetitiveness and cannot be
considered a format (Supreme Court, decision 3817/2010).

Other
requirements are that the format possesses a programmatic structure that
displays a modicum of creativity. This requires the identification of, at least, the structural elements of the story, as well as its space and time
collocation, the main characters and their personalities, and the main thread
of the plot. Lacking these elements, copyright protection shall not be
available, because what one would try to protect is still so vague that it can
be regarded as an idea, rather than an expression thereof.

In
light of earlier case law, [translation
is mine]:

"this Court intends as a format for a TV
programme, protectable as an original work under copyright law, a sketch for a
programme, a plot outline defined in its essential elements, generally intended
for a serial TV production, as resulting from a brief description."

In conclusion, under
Italian law a TV format may be protected by copyright if it has both a structure
that can be repeated and certain fixed elements, as well displaying a modicum of
creativity. With regard to the latter, case law seems consistent in requiring
that the TV format is not novel, but rather the personal and individual expression of its author.

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